Overview
Burr & Forman's intellectual property team assists clients in developing appropriate strategies to identify and protect inventions and technology, and when necessary, helps our clients enforce or defend their rights in those inventions and technology. We represent clients in transactions involving these critical assets and handle litigation related to these areas.
Our attorneys assist clients with all aspects of intellectual property law, including:
- Copyrights
- Domain name & internet issues
- Licensing
- Litigation
- Non-compete
- Patents
- Privacy
- Protective agreements
- Service marks
- Social media
- Trademarks
- Trade secrets
Copyrights
We assist clients in the registration of their copyright interests as well as the licensing and sale of their works. Our copyright attorneys advise clients with respect to protectability of their works, infringement concerns, fair use, proper use of other's materials, and commercialization of their works. We also assist clients in developing appropriate internet policies that comply with the Digital Millennium Copyright Act.
Intellectual Property Litigation
Our attorneys represent and defend our clients' interests in federal and state courts and before the Trademark Trial and Appeals Board (TTAB), and the Patent Office Board of Appeals. Our intellectual property litigation group handles trademark infringement, copyright, unfair competition, trade secret, and patent claims as well as claims of non-compete, false advertising, counterfeiting, antitrust violations, cybersquatting and domain name rights, or software development contracts.
Licensing
Our IP attorneys prepare and negotiate technology agreements to manage rights in our clients' intellectual property, including licenses, assignments, joint development agreements, and research agreements. We work with clients to develop strategies for exploiting an existing intellectual property portfolio and maximizing its value, as well as to license necessary inbound technologies on favorable terms.
Patents
Our patent attorneys evaluate our clients' inventions for patentability and infringement purposes, assist in obtaining patent protection for the inventions, develop profitable licensing strategies, and enforce those rights when appropriate. We assist clients with portfolio management, due diligence efforts, non-competition agreements, development and licensing agreements, and all aspects of patent prosecution.
Technology
Our technology attorneys focus on all aspects of representing technology-based companies. We work with these companies throughout their life assisting with start-up issues specific to technology companies, techniques and strategies for protecting and exploiting their technology, development of appropriate employee agreements and policies, development of licensing strategies, acquisitions of related technologies, and when the time comes, due diligence and assistance in negotiating the best exit strategy for the company. Our team represents clients in handling transactions in the software, biotechnology, entertainment, health care, manufacturing, consumer products, telecommunications, life sciences, food and beverage, energy, hospitality, and franchise industries.
Technology Transactions and IP Due Diligence
In conjunction with our Mergers and Acquisitions group, we assist clients in transactions involving their intellectual property assets. We help clients determine the value of the intellectual property, assess their intellectual property portfolios, identify areas for growth, verify IP ownership, and negotiate the corresponding transaction documents to close the deal.
Trade Secrets
First and foremost we work with clients to identify their trade secrets and develop plans to protect those trade secrets. Our services include development of an overall trade secret protection plan, preparation of confidentiality agreements, employee agreements, necessary manuals, and other individualized policies. We work with clients to understand not only how to identify their trade secrets but how to take steps on a daily basis to protect and maintain their rights in these trade secrets.
Trademarks
We assist clients with all stages of brand management from developing branding strategies, selecting and clearing marks, obtaining federal and state registrations for those marks, developing and implementing appropriate licensing strategies, and enforcing the brand rights. We report to our clients candidly about legal issues and cases, which is particularly important when the clients are offering their business interest to prosecuting trademarks and service marks, both in the U.S. and abroad. Our attorneys handle proceedings at the TTAB, conduct IP due diligence for transactions, handle domain name issues and litigate trademark-related disputes including infringement, unfair competition, and false advertising.
We also advise clients on clearance searches that identify the risks associated with using a mark as well as the impact of common law rights in standard usage and on the Internet. Our team assists clients in the process of securing and maintaining federal or state-level trademark or service mark registration. In addition, our team continually reviews how marks are used and can help identify new opportunities for licensing and enforcement.
